VideoLabs, Inc., together with its subsidiary VL Collective IP, LLC, has filed suit against Amazon (6:22-cv-00079) in the Western District of Texas, alleging infringement of seven patents through the provision of a wide array of products, including streaming systems and services, smart home devices, software, tablets, and TVs. At issue is the support of the H.264 and HLS streaming protocols, auto scaling, WebRTC and SRTP standards, and content flow control. The litigation will join prior affirmative disputes consolidated in the same district, also before District Judge Alan D. Albright, with Dell; a declaratory judgment action filed by Lions Gate Entertainment (Starz Entertainment) is underway in the District of Delaware.
VideoLabs pleads that it was "founded in 2018 as part of an industry-sponsored and funded effort to reduce the cost and risk of technological gridlock associated with diverse patent ownership". It characterizes its leadership as having "decades of experience in intellectual property licensing, during which they have completed over 1,000 intellectual property transactions worldwide and drawn more than $6 billion in revenue". VideoLabs was originally intended to operate on a membership model, "whereby companies would pay an annual fee and would be licensed to VideoLabs' growing portfolio which now stretches to more than 100 assets", reported IAM. However, "[f]or a number of reasons, not the least of which was covid, we simply didn't get enough support from the industry for the membership model", Senior Vice President Ira Blumberg told IAM.
VideoLabs's assets include the seven patents now asserted against Amazon (6,880,156; 7,266,682; 7,440,559; 7,769,238; 7,970,059; 8,139,878; 8,605,794). The '238, '059, and '878 patents are in suit against Dell, with Starz and VideoLabs disputing infringement of the '559 and '794 patents in Delaware, where two other patents are also asserted (7,233,790; RE43,113). (An assertion grid for the campaign is available on RPX Insight.) The original development work for the assets was conducted at a variety of companies, including Nokia, Openwave Systems (which merged into Great Elm Capital Corp. (f/k/a Unwired Planet, Inc.), an entity that asserted some of them, as Unwired Planet, as part of a five-year long case against Apple that ultimately went on to focus on other patents), and Siemens.
In response to the lack of "industry support" for its membership model, VideoLabs turned to litigation, starting with Dell last May. Blumberg emphasized in the interview with IAM VideoLabs' obligation to repay its investors, which include the hedge fund Bardin Hill Investment Partners (f/k/a Halcyon Capital Management) and IP litigation funder Soryn IP Group, according to a 2019 VideoLabs press release. PitchBook indicates that Bardin Hill and Soryn IP led the company's Series A funding, collectively raising $10M. According to Blumberg, "[w]ith the investors who have put their money behind VideoLabs expecting to see a return, the company was forced to take a more aggressive approach".
Founded by CEO Joe Chernesky (formerly of Kudelski Group and Intellectual Ventures LLC), and staffed by a number of IP veterans including Blumerg and Bill Goldman, VideoLabs has pleaded that it has acquired patents originating with "Nokia Corporation, Alcatel-Lucent S.A., Siemens AG, Swisscom AG, 3Com, Panasonic, Ericsson, Samsung, LG, and Hewlett Packard Enterprise". The company's US patent holdings as reflected by currently available USPTO records can be viewed on RPX Insight here. VideoLabs itself owns some of these patents; VL Collective IP, others.
Litigation against Dell and Starz remains in early stages. VideoLabs has counterclaimed in Delaware, affirmatively alleging infringement of the four patents-in-suit. Both there and in its new complaint against Amazon, VideoLabs opens up by pleading that "[d]igital video has become fundamental to how society interacts, communicates, educates, and entertains. In fact, video consumption now accounts for more than 82% of all Internet traffic. The ability to reliably provide high-quality video drives the growth of digital platforms that are increasingly integral to the global economy".
In its complaint against Amazon, the plaintiff alleges that it had reached out to the company over many months to offer its patent portfolio, but that it has not received a "real response". 1/21, Western District of Texas.
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